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Trustees of Boston University v. Everlight Electronics Co.

Enabling “Five of Six” Claimed Embodiments Insufficient Under § 112

Trustees of Boston University v. Everlight Electronics Co., __ F.3d __, 2018 WL ___ (Fed. Cir. July 25, 2018) (PROST, Moore, Reyna) (D. Mass.: Saris) (3 of 5 stars)

Fed Cir reverses denial of JMOL of invalidity for non-enablement. BU’s patent related to the preparation of monocrystalline gallium nitride (GaN) films via molecular beam epitaxy; such films are used in the production of blue-light LEDs. As construed by the district court, BU’s claim covered up to six configurations between the various layers in the claimed device. The opinion discusses how, as to one of these configurations—the growth of a monocrystalline “growth layer” directly on an amorphous “buffer layer”—the testifying experts were in agreement that such a configuration was “physically impossible” using the epitaxial techniques in BU’s patent. Op. at 9. While there was some post-patent evidence that growth of such a layer with non-epitaxial techniques was possible, the opinion holds that such evidence does not bear on the enablement inquiry, which focuses on whether the patent itself taught one of skill how to practice the full scope of the claimed device without undue experimentation as of the patent’s filing date. That the patent enabled five of the six claimed embodiments was insufficient as per Sitrick, 516 F.3d 993 (Fed. Cir. 2008), Liebel-Flarsheim, 481 F.3d 1371 (Fed. Cir. 2007), et al. While it is not necessary for a patent to expressly spell out “every possible iteration of every claim,” it must have a basic enabling disclosure that was lacking in BU’s patent.

KEYWORDS: INVALIDITY (YES); ENABLEMENT (NO); JUDGMENT AS A MATTER OF LAW